DETAILED ACTION
Response to Amendment
This Office Action is responsive to Applicant’s arguments and request for reconsideration of application 18/799,689 (08/09/24) filed on 05/22/26.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 5 - 18 and 21 - 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 22 of U.S. Patent No. 11507930. Although the claims at issue are not identical, they are not patentably distinct from each other because both are directed to:
US App. No. 18799689 (as represented by claim 5)
US Pat. No. 11507930 (as represented by claim 11)
A method of effecting a particular action involving a first party having a first party device and a second party having a second party device, the method comprising:
A system that provides access to disparate autonomous payment networks respectively having network-specific payment processing protocols, buyer, the buyer paying for the goods on behalf of users including a buyer having a mobile phone and a seller, the seller providing goods or services to the or services with the mobile phone, the system comprising:
providing, by at least one processor, access to different networks, each of the different networks configured to effect the particular action involving the first party having the first party device and the second party having the second party device, including communicating with the different networks using different respective network-specific protocols for each of the different networks;
a point-of-sale interface circuit communicatively coupled to receive, for a transaction, electronic point-of-sale transaction data from a remote point-of-sale terminal that is to wirelessly communicate with the buyer's mobile phone at the remote point of sale terminal;
receiving, by the at least one processor, action data for the particular action;
a payment network interface circuit to provide access to a plurality of the disparate autonomous payment networks using the respective, and different network-specific payment processing protocols; and
identifying using the action data, by the at least one processor, a first party identifier of the first party and a second party identifier of the second party;
a computer processor circuit to, for each transaction and the point-of-sale transaction data received therefor; identify, using the point-of-sale transaction data, buyer ID data and seller ID data respectively for the buyer and the seller in the transaction;
retrieving, by the at least one processor, a portion of stored profile data associated with the first party identifier;
retrieve, from a data-storage circuit that stores profile data for each of the users, a portion of the profile data that is electronically associated with the ID data for each of the buyer and the seller;
selecting, by the at least one processor, using the portion of the stored profile data, one of the different networks for processing the particular action for the first party;
select, using the retrieved portion of the profile data, one of the disparate autonomous payment networks for the buyer to process electronic payment for the transaction;
receiving, by the at least one processor, an authentication code provided via the first party device in accordance with a security-based communication protocol;
provide security-based communication between the buyer's-mobile phone and the remote point of sale terminal by directing a request for an authentication code to the buyer's mobile phone;
confirming, by the at least one processor, the authentication code to authenticate and verify approval of the particular action;
and authenticate the transaction in response to receiving a message from the buyer's mobile phone including the authentication code.
responsive to the authentication, causing, by the at least one processor, a network interface associated with the selected one of the different networks to configure data for the particular action into a protocol associated with the selected one of the different networks and effect the particular action via the selected one of the different networks.
Claims 5 - 18 and 21 - 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 20 of U.S. Patent No. 12093906. Although the claims at issue are not identical, they are not patentably distinct from each other because both are directed to:
US App. No. 18799689 (as represented by claim 5)
US Pat. No. 12093906 (as represented by claim 19)
A method of effecting a particular action involving a first party having a first party device and a second party having a second party device, the method comprising:
A method performed by a system, the system including a computer circuit arrangement, a point-of-sale interface circuit, a data-storage circuit, a payment network interface circuit and a computer processor circuit, the method comprising:
providing, by at least one processor, access to different networks, each of the different networks configured to effect the particular action involving the first party having the first party device and the second party having the second party device, including communicating with the different networks using different respective network-specific protocols for each of the different networks;
providing, by the computer circuit arrangement, access to different payment networks respectively having network-specific payment processing protocols, on behalf of a buyer having a buyer's handheld device in a form of a mobile phone or a transaction card and a seller providing goods or services to the buyer who is to pay for the goods or services using the buyer's handheld device;
receiving, by the at least one processor, action data for the particular action;
receiving, by the point-of-sale interface circuit that is communicatively integrated with the computer circuit arrangement, electronic point-of-sale transaction data for a particular transaction from a remote point-of-sale terminal that is to wirelessly communicate with the buyer's handheld device at the remote point-of-sale terminal for receiving buyer ID data for the buyer, the buyer ID data for the buyer being included in the electronic point-of-sale transaction data;
identifying using the action data, by the at least one processor, a first party identifier of the first party and a second party identifier of the second party;
storing, by the data-storage circuit, profile data for the buyer;
retrieving, by the at least one processor, a portion of stored profile data associated with the first party identifier;
providing, by the payment network interface circuit, access to the different payment networks, including communicating with the different payment networks using different respective network-specific payment processing protocols for each of the different payment networks; and
selecting, by the at least one processor, using the portion of the stored profile data, one of the different networks for processing the particular action for the first party;
for the electronic point-of-sale transaction data received for the particular transaction: identifying, by the computer processor circuit and using the electronic point-of- sale transaction data, the buyer ID data and seller ID data respectively for the buyer and the seller in the particular transaction,
receiving, by the at least one processor, an authentication code provided via the first party device in accordance with a security-based communication protocol;
retrieving, by the computer processor circuit from the data-storage circuit, a retrieved portion of the profile data that is electronically associated with the buyer ID data for the buyer,
confirming, by the at least one processor, the authentication code to authenticate and verify approval of the particular action; and
selecting, by the computer processor circuit and using the retrieved portion of the profile data, a selected one of the different payment networks for the buyer to process electronic payment for the particular transaction,
responsive to the authentication, using the selected one of the networks to effect the particular action via the network.
confirming, by the computer processor circuit, use of an authentication code, provided via the buyer's handheld device and in accordance with a security-based communication protocol involving the buyer, to authenticate and verify approval of the particular transaction by the buyer, and
responsive to the authentication, causing, by the at least one processor, a network interface associated with the selected one of the different networks to configure data for the particular action into a protocol associated with the selected one of the different networks and effect the particular action via the selected one of the different networks.
using, by the computer processor circuit, the selected one of the different payment networks to effect payment for the particular transaction via the payment network interface circuit in response to authenticating and verifying approval of the particular transaction by the buyer.
Claims 5 - 18 and 21 - 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 20 of U.S. Patent No. 12093906. Although the claims at issue are not identical, they are not patentably distinct from each other because both are directed to:
US App. No. 18799689 (as represented by claim 5)
US Pat. No. 12093906 (as represented by claim 19)
A method of effecting a particular action involving a first party having a first party device and a second party having a second party device, the method comprising:
A method performed by a system, the system including a computer circuit arrangement, a point-of-sale interface circuit, a data-storage circuit, a payment network interface circuit and a computer processor circuit, the method comprising:
providing, by at least one processor, access to different networks, each of the different networks configured to effect the particular action involving the first party having the first party device and the second party having the second party device, including communicating with the different networks using different respective network-specific protocols for each of the different networks;
providing, by the computer circuit arrangement, access to different payment networks respectively having network-specific payment processing protocols, on behalf of a buyer having a buyer's handheld device in a form of a mobile phone or a transaction card and a seller providing goods or services to the buyer who is to pay for the goods or services using the buyer's handheld device;
receiving, by the at least one processor, action data for the particular action;
receiving, by the point-of-sale interface circuit that is communicatively integrated with the computer circuit arrangement, electronic point-of-sale transaction data for a particular transaction from a remote point-of-sale terminal that is to wirelessly communicate with the buyer's handheld device at the remote point-of-sale terminal for receiving buyer ID data for the buyer, the buyer ID data for the buyer being included in the electronic point-of-sale transaction data;
identifying using the action data, by the at least one processor, a first party identifier of the first party and a second party identifier of the second party;
storing, by the data-storage circuit, profile data for the buyer;
retrieving, by the at least one processor, a portion of stored profile data associated with the first party identifier;
providing, by the payment network interface circuit, access to the different payment networks, including communicating with the different payment networks using different respective network-specific payment processing protocols for each of the different payment networks; and
selecting, by the at least one processor, using the portion of the stored profile data, one of the different networks for processing the particular action for the first party;
for the electronic point-of-sale transaction data received for the particular transaction: identifying, by the computer processor circuit and using the electronic point-of- sale transaction data, the buyer ID data and seller ID data respectively for the buyer and the seller in the particular transaction,
receiving, by the at least one processor, an authentication code provided via the first party device in accordance with a security-based communication protocol;
retrieving, by the computer processor circuit from the data-storage circuit, a retrieved portion of the profile data that is electronically associated with the buyer ID data for the buyer,
confirming, by the at least one processor, the authentication code to authenticate and verify approval of the particular action; and
selecting, by the computer processor circuit and using the retrieved portion of the profile data, a selected one of the different payment networks for the buyer to process electronic payment for the particular transaction,
responsive to the authentication, using the selected one of the networks to effect the particular action via the network.
confirming, by the computer processor circuit, use of an authentication code, provided via the buyer's handheld device and in accordance with a security-based communication protocol involving the buyer, to authenticate and verify approval of the particular transaction by the buyer, and
responsive to the authentication, causing, by the at least one processor, a network interface associated with the selected one of the different networks to configure data for the particular action into a protocol associated with the selected one of the different networks and effect the particular action via the selected one of the different networks.
using, by the computer processor circuit, the selected one of the different payment networks to effect payment for the particular transaction via the payment network interface circuit in response to authenticating and verifying approval of the particular transaction by the buyer.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 5 - 18 and 21 - 24 is/ are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
ALICE/ MAYO: TWO-PART ANALYSIS
2A. First, a determination whether the claim is directed to a judicial exception (i.e., abstract idea).
Prong 1: A determination whether the claim recites a judicial exception (i.e., abstract idea).
Groupings of abstract ideas enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Mathematical concepts- mathematical relationships, mathematical formulas or equations, mathematical calculations.
Certain methods of organizing human activity- fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
Mental processes- concepts performed in the human mind (including an observation, evaluation, judgement, opinion).
Prong 2: A determination whether the judicial exception (i.e., abstract idea) is integrated into a practical application.
Considerations indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception
Considerations that are not indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
2B. Second, a determination whether the claim provides an inventive concept (i.e., Whether the claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
Considerations indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception NOTE: The only consideration that does not overlap with the considerations indicative of integration into a practical application associated with step 2A: Prong 2.
Considerations that are not indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea.
Adding insignificant extra-solution activity to the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. NOTE: The only consideration that does not overlap with the considerations that are not indicative of integration into a practical application associated with step 2A: Prong 2.
See also, 2010 Revised Patent Subject Matter Eligibility Guidance; Federal Register; Vol. 84, No. 4; Monday, January 7, 2019
Claims 5 - 18 and 21 - 24 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
1: Statutory Category
Applicant’s claimed invention, as described in independent claim 5, is/are directed to a process (i.e. a method).
2(A): The claim(s) are directed to a judicial exception (i.e., an abstract idea).
PRONG 1: The claim(s) recite a judicial exception (i.e., an abstract idea).
Certain Method of Organizing Human Activity
The claim as a whole recites a method of organizing human activity. The claimed invention involves providing access to different networks; receiving action data for the particular action; identifying using the action data a first party identifier of the first party and a second party identifier of the second party; retrieving a portion of stored profile data associated with the first party identifier; selecting using the portion of the stored profile data, one of the different networks for processing the particular action for the first party; receiving an authentication code in accordance with a security-based communication protocol; confirming the authentication code to authenticate and verify approval of the particular action; and responsive to the authentication, configuring data for the particular action into a protocol associated with the selected one of the different networks and effecting the particular action via the selected one of the different networks, which is a fundamental economic principles or practices (a particular action (e.g., “wherein the particular action effects a transfer from the first party to the second party”)); commercial or legal (a particular action (e.g., “wherein the particular action effects a transfer from the first party to the second party”)); and managing personal behavior or relationships or interactions between people (providing/ communicating, receiving, identifying, retrieving, selecting, confirming, causing ….. to configure ….. and effect).
The mere nominal recitation of “involving a first party having a first party device and a second party having a second party device” (preamble only) and “by at least one processor” does not take the claim out of the method of organizing human activity grouping. Thus, the claim recites an abstract idea.
Mental Processes
The claim recites limitations directed to providing access to different networks; receiving action data for the particular action; identifying using the action data a first party identifier of the first party and a second party identifier of the second party; retrieving a portion of stored profile data associated with the first party identifier; selecting using the portion of the stored profile data, one of the different networks for processing the particular action for the first party; receiving an authentication code in accordance with a security-based communication protocol; confirming the authentication code to authenticate and verify approval of the particular action; and responsive to the authentication, configuring data for the particular action into a protocol associated with the selected one of the different networks and effecting the particular action via the selected one of the different networks.
The limitation(s), as drafted, is/are a process that, under it’s broadest reasonable interpretation, covers performance of the limitation(s) in the mind. That is, other than reciting “involving a first party having a first party device and a second party having a second party device” (preamble only) and “by at least one processor”, nothing in the claim element precludes the steps from practically being performed in the mind. In other words, the claim encompasses the user manually providing access to different networks; receiving action data for the particular action; identifying using the action data a first party identifier of the first party and a second party identifier of the second party; retrieving a portion of stored profile data associated with the first party identifier; selecting using the portion of the stored profile data, one of the different networks for processing the particular action for the first party; receiving an authentication code in accordance with a security-based communication protocol; confirming the authentication code to authenticate and verify approval of the particular action; and responsive to the authentication, configuring data for the particular action into a protocol associated with the selected one of the different networks and effecting the particular action via the selected one of the different networks.
The mere nominal recitation of “involving a first party having a first party device and a second party having a second party device” (preamble only) and “by at least one processor” does not take the claim limitation out of the mental processes grouping. This/these limitation(s) recite a mental process. Thus, the claim recites an abstract idea.
PRONG 2: The judicial exception (i.e., an abstract idea) is not integrated into a practical application.
The claim recites the combination of additional elements of “involving a first party having a first party device and a second party having a second party device” (preamble only). The claim recites the combination of additional elements of each of the positively recited steps or acts being performed “by at least one processor”. The claim recites the combination of additional elements of “each of the different networks configured to effect the particular action involving the first party having the first party device and the second party having the second party device, including communicating with the different networks using different respective network-specific protocols for each of the different networks”. The claim recites the combination of additional elements of the authentication code received is provided “via the first party device”. The claim recites the combination of additional elements of “responsive to the authentication, causing, by the at least one processor, a network interface associated with the selected one of the different networks to configure data ….. and effect the particular action …..”. The additional element(s) is/ are recited at a high level of generality (i.e., as a generic computer performing the generic computer functions of (a) data receipt/ transmission (e.g., “providing”/ “communicating”, “receiving”, “retrieving”, etc. step(s) as claimed); and (b) data processing (e.g., “identifying”, “selecting”, “confirming”, “causing ….. to configure ….. and effect”, etc. step(s) as claimed)). The additional element(s) is/ are recited at a high level of generality (i.e., as general means of gathering action data for the particular action), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The claim is recited at a high level of generality, and merely automates the step(s). Accordingly, the additional element(s) does not integrate the abstract idea into a practical application because it does not impose any meaningful limitations on practicing the abstract idea. The claim is directed to an abstract idea. NOTE: (a) The claimed invention is exclusively from the perspective of “at least one processor”. (b) Although a “first party device” and a “second party device” are referenced in the claim, the claimed invention is not from the perspective of the “first party device” and the “second party device”; and the “first party device” and the “second party device” do not perform any of the positively recited steps or acts required of the claimed invention. (c) Although “networks” are referenced in the claim, the claimed invention is not from the perspective of the “networks” and the “networks” do not perform any of the positively recited steps or acts required of the claimed invention.
Since the claim(s) recite a judicial exception and fails to integrate the judicial exception into a practical application, the claim(s) is/are “directed to” the judicial exception. Thus, the claim(s) must be reviewed under the second step of the Alice/ Mayo analysis to determine whether the abstract idea has been applied in an eligible manner.
2(B): The claims do not provide an inventive concept (i.e., The claim(s) do not include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
As discussed with respect to Step 2A Prong Two, the additional element(s) in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Furthermore, the additional element(s) under STEP 2A Prong 2 have been evaluated in STEP 2B to determine if it is more than what is well-understood, routine conventional activity in the field. Applicant’s specification as filed 08/09/24 does not provide any indication that the technology is anything other than generic, off-the-shelf computer components. Furthermore, the prosecution history of the instant application provides Kight, US Pub. No. 2003/0004867; Stambaugh, US Pub. No. 2007/0175978; Coronna, US Pub. No. 2002/0111916; Dua, US Pub. No. 2006/0165060; Korotin, US Pub. No. 2004/0105444; and Singhal, US Pat. No. 8,195,568 operating in a similar environment, suggesting performing tasks such as (a) data receipt/ transmission (e.g., “providing”/ “communicating”, “receiving”, “retrieving”, etc. step(s) as claimed); and (b) data processing (e.g., “identifying”, “selecting”, “confirming”, “causing ….. to configure ….. and effect”, etc. step(s) as claimed) are well understood, routine and conventional. Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed by applicant such as (a) data receipt/ transmission (e.g., “providing”/ “communicating”, “receiving”, “retrieving”, etc. step(s) as claimed); and (b) data processing (e.g., “identifying”, “selecting”, “confirming”, “causing ….. to configure ….. and effect”, etc. step(s) as claimed) are well understood, routine and conventional. Symantec, TLI, OIP Techs and buySAFE court decisions cited in MPEP § 2106.05(D) (ii) indicate that mere collection or receipt of data over a network is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Accordingly, a conclusion that the additional elements are well-understood, routine, conventional activity is supported under Berkheimer.
For these reasons, there is no inventive concept in the claim, and thus the claim is ineligible.
Dependent claims 6 - 18 and 21 - 24 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 5 and 21 - 23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 5 recites, “providing, by at least one processor, access to different networks, each of the different networks configured to effect the particular action involving the first party having the first party device and the second party having the second party device, including communicating with the different networks using different respective network-specific protocols for each of the different networks”; and “responsive to the authentication, causing, by the at least one processor, a network interface associated with the selected one of the different networks to configure data for the particular action into a protocol associated with the selected one of the different networks and effect the particular action via the selected one of the different networks”. It is unclear where support may be found in applicant’s specification as filed 08/09/24.
Claim 21 recites, “wherein the selected one of the different networks is selected independently of the first device and the second device, and the action data is network independent”. It is unclear where support may be found in applicant’s specification as filed 08/09/24.
Claim 22 recites, “wherein the selected one of the different networks is not identified to the first device or the second device during the particular action”. It is unclear where support may be found in applicant’s specification as filed 08/09/24.
Claim 23 recites, “wherein the selected one of the different networks is a first network, and the method further comprises: selecting, independently from the first network, a second network from the different networks for processing the particular action for the second party; and processing the particular action between the first network and second network”. It is unclear where support may be found in applicant’s specification as filed 08/09/24.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 5, 6, 16, 18 and 21 - 23 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kight, US Pub. No. 2003/0004867 in view of Stambaugh, US Pub. No. 2007/0175978 and Coronna, US Pub. No. 2002/0111916.
Re Claim 5: Kight discloses a method of effecting a particular action involving a first party having a first party device and a second party having a second party device, the method comprising:
providing, by at least one processor, access to different networks, each of the different networks configured, including communicating with the different networks using different respective network-specific protocols for each of the different networks (Kight, abstract, [0034] [0035] [0036]);
receiving, by the at least one processor, action data for the particular action (Kight, abstract, [0034] [0035] [0036]);
identifying using the action data, by the at least one processor, a first party identifier of the first party and a second party identifier of the second party (Kight, [0036] [0038]);
retrieving, by the at least one processor, a portion of stored profile data associated with the first party identifier (Kight, [0036] [0038] [0039]);
selecting, by the at least one processor, using the portion of the stored profile data, one of the different networks for processing the particular action for the first party (Kight, [0037] [0039]); and
causing, by the at least one processor, a network interface associated with the selected one of the different networks to configure data for the particular action into a protocol associated with the selected one of the different networks (Kight, abstract, [0034] [0035] [0036]).
Although Kight discloses providing, by at least one processor, access to different networks, each of the different networks configured, including communicating with the different networks using different respective network-specific protocols for each of the different networks; Kight fails to explicitly disclose to effect the particular action involving the first party having the first party device and the second party having the second party device.
Kight fails to explicitly disclose:
receiving, by the at least one processor, an authentication code provided via the first party device in accordance with a security-based communication protocol;
confirming, by the at least one processor, the authentication code to authenticate and verify approval of the particular action; and
Although Kight discloses causing, by the at least one processor, a network interface associated with the selected one of the different networks to configure data for the particular action into a protocol associated with the selected one of the different networks. Kight fails to explicitly disclose responsive to the authentication and effect the particular action via the selected one of the different networks.
Stambaugh discloses:
receiving, by the at least one processor, an authentication code provided via the first party device in accordance with a security-based communication protocol (Stambaugh, abstract, [0011] [0012] [0013] [0017] [0045] [0046] [0050] [0051] [0052] [0055]);
confirming, by the at least one processor, the authentication code to authenticate and verify approval of the particular action (Stambaugh, abstract, [0011] [0012] [0013] [0017] [0045] [0046] [0050] [0051] [0052] [0055]);
Coronna discloses:
to effect the particular action involving the first party having the first party device and the second party having the second party device (Coronna, abstract, [0008] [0009] [0010] [0011]);
responsive to the authentication and effect the particular action via the selected one of the different networks (Coronna, abstract, [0008] [0009] [0010] [0011]).
Analogous art It has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Kight, Stambaugh and Coronna are in the field of the inventor’s endeavor as they pertain to data processing involving transaction and/ or accounting records. In this case, Kight is reasonably pertinent to a particular problem with which the inventor was concerned of providing different networks using different respective network-specific protocols. In this case, Stambaugh is reasonably pertinent to a particular problem with which the inventor was concerned of providing authentication. In this case, Stambaugh is reasonably pertinent to a particular problem with which the inventor was concerned of effecting a particular action.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the teachings of Kight by adopting the teachings of Stambaugh and Coronna to provide providing, by at least one processor, access to different networks, each of the different networks configured to effect the particular action involving the first party having the first party device and the second party having the second party device, including communicating with the different networks using different respective network-specific protocols for each of the different networks;
receiving, by the at least one processor, an authentication code provided via the first party device in accordance with a security-based communication protocol;
confirming, by the at least one processor, the authentication code to authenticate and verify approval of the particular action; and responsive to the authentication, causing, by the at least one processor, a network interface associated with the selected one of the different networks to configure data for the particular action into a protocol associated with the selected one of the different networks and effect the particular action via the selected one of the different networks.
One would have been motivated to improve security and minimize risk for users.
The claimed invention applies
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known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. Thus, the claimed subject matter likely would have been obvious under KSR. KSR, 127 S.Ct. at 1741, 82 USPQ2d at 1396.
Re Claim 6: Kight in view of Stambaugh and Coronna discloses the claimed invention supra and Coronna further discloses wherein the particular action effects a transfer from the first party to the second party using respective accounts that share a common proprietary network among the different networks (Coronna, abstract, [0008] [0009] [0010] [0011] [0039]).
Re Claim 16: Kight in view of Stambaugh and Coronna discloses the claimed invention supra and Stambaugh further discloses confirming, by the at least one processor, the authentication code use according to the security-based communication protocol by involving a text message conveyed between a mobile phone linked or corresponding to the first party identifier and a processing control circuit that is operated on behalf of an institution (Stambaugh, abstract, [0011] [0012] [0013] [0017] [0045] [0046] [0050] [0051] [0052] [0055]).
Re Claim 18: Kight in view of Stambaugh and Coronna discloses the claimed invention supra and Stambaugh further discloses sending, by the at least one processor, an authentication text message for review by the first party (Stambaugh, abstract, [0011] [0012] [0013] [0017] [0045] [0046] [0050] [0051] [0052] [0055]); and
authenticating, by the at least one processor, the particular action in response to receiving a confirmation indication from the first party (Stambaugh, abstract, [0011] [0012] [0013] [0017] [0045] [0046] [0050] [0051] [0052] [0055]).
Re Claim 21: Kight in view of Stambaugh and Coronna discloses the claimed invention supra and Kight further discloses wherein the selected one of the different networks is selected independently of the first device and the second device, and the action data is network independent (Kight, [0037] [0039]).
Re Claim 22: Kight in view of Stambaugh and Coronna discloses the claimed invention supra and Kight wherein the selected one of the different networks is not identified to the first device or the second device during the particular action (Kight, [0037] [0039]).
Re Claim 23: Kight in view of Stambaugh and Coronna discloses the claimed invention supra and Kight wherein the selected one of the different networks is a first network, and the method further comprises:
selecting, independently from the first network, a second network from the different networks for processing the particular action for the second party (Kight, [0037] [0039]); and
processing the particular action between the first network and second network (Kight, [0037] [0039]).
Claims 7 - 15 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kight in view of Stambaugh and Coronna as applied to claim 5 above, and further in view of Dua, US Pub. No. 2006/0165060.
Re Claim 7: Kight in view of Stambaugh and Coronna discloses the claimed invention and Coronna further discloses:
wherein the single account is linked to each of multiple ones of the different networks (Coronna, abstract, [0008] [0009] [0010] [0011] [0039]).
Coronna fails to explicitly disclose:
wherein the first party device stores account identification data corresponding to a single account to be used by the second party device for processing the particular action.
Dua discloses:
wherein the first party device stores account identification data corresponding to a single account to be used by the second party device for processing the particular action (Dua, [0048] [0056] [0060] [0336] [0422]).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the teachings of Kight in view Stambaugh and Coronna by further adopting the teachings of Dua to provide wherein the first party device stores account identification data corresponding to a single account to be used by the second party device for processing the particular action.
One would have been motivated to provide increased speed, flexibility and convenience for users.
The claimed invention applies
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known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. Thus, the claimed subject matter likely would have been obvious under KSR. KSR, 127 S.Ct. at 1741, 82 USPQ2d at 1396.
Re Claim 8: Kight in view of Stambaugh and Coronna discloses the claimed invention supra but fails to explicitly disclose obtaining, at the second party device and from the first party device, data related to at least one of a plurality of accounts of the first party that can be used for the particular action.
Dua discloses:
obtaining, at the second party device and from the first party device, data related to at least one of a plurality of accounts of the first party that can be used for the particular action (Dua, [0048] [0056] [0060] [0336] [0422]).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the teachings of Kight in view Stambaugh and Coronna by further adopting the teachings of Dua to provide obtaining, at the second party device and from the first party device, data related to at least one of a plurality of accounts of the first party that can be used for the particular action.
One would have been motivated to provide increased speed, flexibility and convenience for users.
The claimed invention applies
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known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. Thus, the claimed subject matter likely would have been obvious under KSR. KSR, 127 S.Ct. at 1741, 82 USPQ2d at 1396.
Re Claim 9: Kight in view of Stambaugh and Coronna discloses the claimed invention supra but fails to explicitly disclose obtaining the first party identifier at the second party device by way of radio-frequency identification technology.
Dua discloses:
obtaining the first party identifier at the second party device by way of radio-frequency identification technology (Dua, [0296] [0315] [0318] [0382]).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the teachings of Kight in view Stambaugh and Coronna by further adopting the teachings of Dua to provide obtaining the first party identifier at the second party device by way of radio-frequency identification technology.
One would have been motivated to provide increased speed, flexibility and convenience for users.
The claimed invention applies
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known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. Thus, the claimed subject matter likely would have been obvious under KSR. KSR, 127 S.Ct. at 1741, 82 USPQ2d at 1396.
Re Claim 10: Kight in view of Stambaugh and Coronna discloses the claimed invention supra but fails to explicitly disclose wherein the first party device does not display or otherwise provide an external identifier as part of the first party identifier for the particular action.
Dua discloses:
wherein the first party device does not display or otherwise provide an external identifier as part of the first party identifier for the particular action (Dua, [0042] [0047] [0048] [0418] [0433]).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the teachings of Kight in view Stambaugh and Coronna by further adopting the teachings of Dua to provide wherein the first party device does not display or otherwise provide an external identifier as part of the first party identifier for the particular action.
One would have been motivated to provide increased speed, flexibility and convenience for users.
The claimed invention applies
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known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. Thus, the claimed subject matter likely would have been obvious under KSR. KSR, 127 S.Ct. at 1741, 82 USPQ2d at 1396.
Re Claim 11: Kight in view of Stambaugh and Coronna discloses the claimed invention supra but fails to explicitly disclose receiving, at the second party device, an internal identifier from the first party device as part of the first party identifier.
Dua discloses:
receiving, at the second party device, an internal identifier from the first party device as part of the first party identifier (Dua, [0042] [0047] [0048] [0418] [0433]).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the teachings of Kight in view Stambaugh and Coronna by further adopting the teachings of Dua to provide receiving, at the second party device, an internal identifier from the first party device as part of the first party identifier.
One would have been motivated to provide increased speed, flexibility and convenience for users.
The claimed invention applies
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known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. Thus, the claimed subject matter likely would have been obvious under KSR. KSR, 127 S.Ct. at 1741, 82 USPQ2d at 1396.
Re Claim 12: Kight in view of Stambaugh and Coronna discloses the claimed invention supra but fails to explicitly disclose wherein the security-based communication protocol is based on an encrypted code from the first party device for verification before completion of the particular action.
Dua discloses:
wherein the security-based communication protocol is based on an encrypted code from the first party device for verification before completion of the particular action (Dua, [0261] [0319] [0362]).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the teachings of Kight in view Stambaugh and Coronna by further adopting the teachings of Dua to provide wherein the security-based communication protocol is based on an encrypted code from the first party device for verification before completion of the particular action.
One would have been motivated to provide increased speed, flexibility and convenience for users.
The claimed invention applies
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known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. Thus, the claimed subject matter likely would have been obvious under KSR. KSR, 127 S.Ct. at 1741, 82 USPQ2d at 1396.
Re Claim 13: Kight in view of Stambaugh and Coronna discloses the claimed invention supra but fails to explicitly disclose wherein the security-based communication protocol for the particular action includes a confirmation requirement that the first party device is located proximate the second party device.
Dua discloses:
wherein the security-based communication protocol for the particular action includes a confirmation requirement that the first party device is located proximate the second party device (Dua, abstract, [0026] [0315] [0318] [0405]).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the teachings of Kight in view Stambaugh and Coronna by further adopting the teachings of Dua to provide wherein the security-based communication protocol for the particular action includes a confirmation requirement that the first party device is located proximate the second party device.
One would have been motivated to provide increased speed, flexibility and convenience for users.
The claimed invention applies
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known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. Thus, the claimed subject matter likely would have been obvious under KSR. KSR, 127 S.Ct. at 1741, 82 USPQ2d at 1396.
Re Claim 14: Kight in view of Stambaugh, Coronna and Dua discloses the claimed invention supra and Dua further discloses
using a geographic-location confirmation circuit to confirm that the first party device is located proximate the second party device (Dua, abstract, [0026] [0315] [0318] [0405]).
Re Claim 15: Kight in view of Stambaugh and Coronna discloses the claimed invention supra but fails to explicitly disclose wherein a mobile phone linked or corresponding to the first party identifier is not used as an identification source for the particular action.
Dua discloses:
wherein a mobile phone linked or corresponding to the first party identifier is not used as an identification source for the particular action (Dua, [0042] [0047] [0048] [0418] [0433]).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the teachings of Kight in view Stambaugh and Coronna by further adopting the teachings of Dua to provide wherein a mobile phone linked or corresponding to the first party identifier is not used as an identification source for the particular action.
One would have been motivated to provide increased speed, flexibility and convenience for users.
The claimed invention applies
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known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. Thus, the claimed subject matter likely would have been obvious under KSR. KSR, 127 S.Ct. at 1741, 82 USPQ2d at 1396.
Claim 17 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kight in view of Stambaugh and Coronna as applied to claim 5 above, and further in view of Korotin, US Pub. No. 2004/0105444.
Re Claim 17: Kight in view of Stambaugh and Coronna discloses the claimed invention supra but fails to explicitly disclose accessing, by the at least one processor, the action data by accessing action data packets that are packaged for sending to the different networks in accordance with respective communication protocols for each network of the different networks, and sending, by the at least one processor, to each network of the different networks, selective information that is proprietary to that network's account or accounts having a bearing upon the particular action, by separating first party information from second party information in the action data, by sending the separated first party information to one of the different networks for the first party and by sending the separated second party information to one of the different networks for the second party, so that each network of the different networks receives only that information pertinent to the particular action for that network.
Korotin discloses:
accessing, by the at least one processor, the action data by accessing action data packets that are packaged for sending to the different networks in accordance with respective communication protocols for each network of the different networks (Korotin, abstract, [0035] [0036] [0037] [0106] [0107] [0108] [0109]), and
sending, by the at least one processor, to each network of the different networks, selective information that is proprietary to that network's account or accounts having a bearing upon the particular action, by separating first party information from second party information in the action data, by sending the separated first party information to one of the different networks for the first party and by sending the separated second party information to one of the different networks for the second party, so that each network of the different networks receives only that information pertinent to the particular action for that network (Korotin, abstract, [0035] [0036] [0037] [0106] [0107] [0108] [0109]).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the teachings of Kight in view Stambaugh and Coronna by further adopting the teachings of Korotin to provide accessing the action data by accessing action data packets that are packaged for sending to the different networks in accordance with the respective communication protocol for each network, and
sending to each network, selective information that is proprietary to that network's account or accounts having a bearing upon the action, by separating first party information from second party information in the action data, by sending the separated first party information to one of the networks for the first party and by sending the separated second party information to one of the networks for the second party, so that each network receives only that information pertinent to the action for that network.
One would have been motivated to improve efficiency and security.
The claimed invention applies
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known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. Thus, the claimed subject matter likely would have been obvious under KSR. KSR, 127 S.Ct. at 1741, 82 USPQ2d at 1396.
Claim 24 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Kight in view of Stambaugh and Coronna as applied to claim 5 above, and further in view of Singhal, US Pat. No. 8,195,568.
Re Claim 24: Kight in view of Stambaugh and Coronna discloses the claimed invention supra and Kight further discloses wherein the one of the different networks is different than the particular network (Kight, abstract, [0034] [0035] [0036]).
Although Kight discloses wherein the one of the different networks is different than the particular network. Kight fails to explicitly disclose wherein the first device is a first credit card associated with a particular network.
Singhal discloses wherein the first device is a first credit card associated with a particular network (Singhal, abstract, col. 3, lines 38 - 53; col. 4, lines 38 - 45; col. 5, lines 32 - 55).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the teachings of Kight in view Stambaugh and Coronna by further adopting the teachings of Singhal to provide wherein the first device is a first credit card associated with a particular network, and the one of the different networks is different than the particular network.
One would have been motivated to increase flexibility.
The claimed invention applies
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known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. Thus, the claimed subject matter likely would have been obvious under KSR. KSR, 127 S.Ct. at 1741, 82 USPQ2d at 1396.
Response to Arguments
Rejoinder
Upon the indication of allowance, all claims that incorporate all the features of an allowed claim will be considered for rejoinder.
Objections
Withdrawn in light of applicant’s arguments and/ or amendments.
Double Patenting
Applicant's arguments have been fully considered but they are not persuasive. No Terminal Disclaimer has been filed.
112
Please note the rejections withdrawn and maintained in light of applicant’s arguments and/ or amendments.
101
Applicant's arguments have been fully considered but they are not persuasive.
(1)Applicant argues the claim(s) are not directed to a judicial exception (i.e., an abstract idea).
The claim(s) recite a judicial exception (i.e., an abstract idea).
Certain Method of Organizing Human Activity
The claimed invention is directed to certain methods of organizing human activity.
Fundamental economic principles or practices relate to the economy and commerce. The claimed invention encompasses fundamental economic principles or practices as it relates to processing payments (i.e., a particular action (e.g., “wherein the particular action effects a transfer from the first party to the second party”)).
This interpretation is consistent with the prosecution history of the instant application.
For example, abstract of applicant’s specification as filed 08/09/24 states:
Electronic transaction data sets are processed for a multitude of disparate transactions using a plurality of autonomous payment networks. A software-programmed computer circuit receives and processes electronic transaction data to identify and use electronic ID data to retrieve stored profile data. The computer circuit then uses the retrieved profile data to select one of a plurality of payment networks available to each of a buyer and seller involved in the transaction. Electronic payment is carried out using the selected payment networks.
See at least claims 5 - 8, 10, 12 - 13, 15, 17 - 18 and 23 as filed 04/15/26.
The claimed invention encompasses commercial or legal interactions. The claimed invention relates to processing payments (i.e., a particular action (e.g., “wherein the particular action effects a transfer from the first party to the second party”)). Processing payments, in the instant scenario, pertains to agreements in the form of “sales activities or behaviors”, and “business relations”.
The claimed invention encompasses managing personal behavior or relationships or interactions (e.g., providing/ communicating, receiving, identifying, retrieving, selecting, confirming, causing ….. to configure ….. and effect).
See also, MPEP §2106.04(a)(2)(II).
Mental Processes
The claimed invention is directed to mental processes.
The claimed invention encompasses observations, evaluations, judgements and opinions (e.g.,”identifying using the action data ….. a first party identifier of the first party and a second party identifier of the second party”; “selecting ….. using the portion of the stored profile data, one of the different networks for processing the particular action for the first party”; “confirming ….. the authentication code to authenticate and verify approval of the particular action”; and “responsive to the authentication, causing ….. a network interface associated with the selected one of the different networks to configure data for the particular action into a protocol associated with the selected one of the different networks and effect the particular action via the selected one of the different networks”.) which are examples of mental processes.
Contrary to applicant’s arguments, the courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid. Similarly, the courts do not distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. Although claims 5 - 18 and 21 - 24 recite performance on a machine (e.g., “at least one processor” in method claims 5 - 18 and 21 - 24), nothing forecloses applicant’s claimed invention from being performed by a human and thus applicant’s claimed invention is still directed to a mental process.
See also, MPEP §2106.04(a)(2)(III).
(2)Applicant argues the judicial exception (i.e., an abstract idea) is integrated into a practical application.
Applicant suggests the claimed invention presents a “practical application” because it (a) provides a technical solution to a technical problem (e.g., “These claim features are not directed to an abstract idea, but rather to a specific technical solution for enabling interoperability between disparate, autonomous payment networks that would otherwise be incapable of communicating with one another.” See pg. 11 of applicant’s arguments/ remarks as filed 05/22/26); and (b) provides improvements to the functioning of a computer, or to any other technology or technical field (e.g., “recites an improvement to the technology of electronic payment network systems”. See pg. 12 of applicant’s arguments/ remarks as filed 05/22/26.). The Examiner disagrees.
Applicant’s arguments suggesting the claimed invention (a) provides a technical solution to a technical problem; and (b) provides improvements to the functioning of a computer, or to any other technology or technical field suggests the applicant believes the technical aspects of the invention are substantial. There exists alternative perspectives however.
As noted above, processing payments (i.e., a particular action (e.g., “wherein the particular action effects a transfer from the first party to the second party”)) is directed to the underlying abstract idea, not the functioning of the computer itself. What applicant is really arguing is the use of a computer as a tool or the benefits of automation itself. For example, authentication and verification has non-automated application. For example, adapting/ converting records to different entity requirements has non-automated application.
Adding the words “apply it” (or an equivalent) with the judicial exception is not
not indicative of integration into a practical application. See also, MPEP § 2106.05(f). Merely using a computer as a tool to perform an abstract idea; and mere instructions to implement an abstract idea on a computer are not indicative of integration into a practical application. See also, MPEP §2106.05(f).
The role of the device is limited to necessary data gathering and outputting (e.g., “providing, by at least one processor, access to different networks, each of the different networks configured to effect the particular action involving the first party having the first party device and the second party having the second party device, including communicating with the different networks using different respective network-specific protocols for each of the different networks; receiving, by the at least one processor, action data for the particular action”; “retrieving, by the at least one processor, a portion of stored profile data associated with the first party identifier”; “receiving, by the at least one processor, an authentication code provided via the first party device in accordance with a security-based communication protocol” steps as claimed.).
Adding insignificant extra-solution activity to the judicial exception is not indicative of integration into a practical application. See also, MPEP §2106.05 (g).
Collecting information (e.g., “providing, by at least one processor, access to different networks, each of the different networks configured to effect the particular action involving the first party having the first party device and the second party having the second party device, including communicating with the different networks using different respective network-specific protocols for each of the different networks;
receiving, by the at least one processor, action data for the particular action”;
“retrieving, by the at least one processor, a portion of stored profile data associated with the first party identifier”; “receiving, by the at least one processor, an authentication code provided via the first party device in accordance with a security-based communication protocol”); analyzing it (e.g., “identifying using the action data, by the at least one processor, a first party identifier of the first party and a second party identifier of the second party”; “selecting, by the at least one processor, using the portion of the stored profile data, one of the different networks for processing the particular action for the first party”; “confirming, by the at least one processor, the authentication code to authenticate and verify approval of the particular action; and responsive to the authentication, causing, by the at least one processor, a network interface associated with the selected one of the different networks to configure data for the particular action into a protocol associated with the selected one of the different networks and effect the particular action via the selected one of the different networks”.); and displaying certain results of the collection and analysis merely indicates a field of use or technical environment in which to apply the judicial exception.
Generally linking the use of the judicial exception to a particular technological environment or field of use. See also, MPEP §2106.05(h).
NOTE: It is noted that the features upon which applicant relies (i.e., (a) “These claim features are not directed to an abstract idea, but rather to a specific technical solution for enabling interoperability between disparate, autonomous payment networks that would otherwise be incapable of communicating with one another. As described in the specification, "a single card or account can be used as a manner in which to access a plurality of payment networks, and payment for a common transaction can be effected using disparate, autonomous networks that, absent the integrated processor, would not otherwise be capable of communicating with one another." See specification as filed, page 8. The specification further explains that "such an approach involves interacting with payment networks configured and operated for operating independently, to respectively provide payment to a merchant and effect settlement from a buyer, with these functions now carried out via the integrated processor." Id.” See pg. 11 - 12 of applicant’s arguments/ remarks as filed 05/22/26. (b) “These features are not mere instructions to apply an abstract idea on a computer, but rather specific technical implementations that enable interoperability between otherwise incompatible payment networks.” See pg. 12 - 13 of applicant’s arguments/ remarks as filed 05/22/26.) are not recited in the rejected claim(s). NOTE: Applicant’s claims are broad and subject to broad interpretation. See also, MPEP § 2111. Applicant’s arguments regarding the “practical application” of the claimed invention rely heavily upon features that are not required of the claimed invention. For example, the “networks”, as claimed, are not required to be “disparate”, “autonomous”, “payment”, “incapable of communicating with one another” or “operating independently”. For example, the “action” is not required to be a “payment” and the “first party” and the “second party” are not required to be a “buyer” and a “merchant”. There is no “payment to a merchant” or “settlement from a buyer” required of the claimed invention. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
(3)Applicant argues the claimed invention provides an inventive concept (i.e., The claim(s) do not include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
As discussed with respect to Step 2A Prong Two, the additional element(s) in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Furthermore, the additional element(s) under STEP 2A Prong 2 have been evaluated in STEP 2B to determine if it is more than what is well-understood, routine conventional activity in the field.
Applicant’s specification as filed 08/09/24 does not provide any indication that the technology (e.g., “at least one processor”) is anything other than generic, off-the-shelf computer components, see at least pg. 4, lines 1 - 29; pg. 5, line 20+ - pg. 6, line 10; pg. 8, lines 12 - 27; pg. 29, lines 14 - 30.
Furthermore, the prosecution history of the instant application provides Kight, US Pub. No. 2003/0004867; Stambaugh, US Pub. No. 2007/0175978; Coronna, US Pub. No. 2002/0111916; Dua, US Pub. No. 2006/0165060; Korotin, US Pub. No. 2004/0105444; and Singhal, US Pat. No. 8,195,568 operating in a similar environment, suggesting performing tasks such as (a) data receipt/ transmission (e.g., “providing”/ “communicating”, “receiving”, “retrieving”, etc. step(s) as claimed); and (b) data processing (e.g., “identifying”, “selecting”, “confirming”, “causing ….. to configure ….. and effect”, etc. step(s) as claimed) are well understood, routine and conventional. See Kight, abstract, [0034] [0035] [0036] [0037] [0038]0039]. See Stambaugh, abstract, [0011] [0012] [0017] [0045] [0046] [0051] [0052] [0055]. See Coronna, abstract, [0008] [0009] [0010] [0011]. See Dua, abstract, [0026] [0042] [0047] [0048] [0056] [0060] [00261] [00296] [0315] [0318] [0319] [0336] [0362] [0382] [0405] [0418] [0422] [0433]. See Korotin, abstract, [0035] [0036] [0037] [0106] [0107] [0108] [0109]. See Singhal, abstract, col. 3, lines 38 - 53; col. 4, lines 38 - 45; col. 5, lines 32 - 55
Furthermore, the courts have recognized that computer functions or tasks analogous to those claimed by applicant such as (a) data receipt/ transmission (e.g., “providing”/ “communicating”, “receiving”, “retrieving”, etc. step(s) as claimed); and (b) data processing (e.g., “identifying”, “selecting”, “confirming”, “causing ….. to configure ….. and effect”, etc. step(s) as claimed) are well understood, routine and conventional. Symantec, TLI, OIP Techs and buySAFE court decisions cited in MPEP § 2106.05(D) (ii) indicate that mere collection or receipt of data over a network is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Flook, Bancorp court decisions cited in MPEP § 2106.05(D) (ii) indicate performing repetitive calculations is a well-understood, routine, and conventional function when it is claimed in a merely generic manner (as here). Accordingly, a conclusion that the additional elements are well-understood, routine, conventional activity is supported under Berkheimer.
For these reasons, there is no inventive concept in the claim, and thus the claim is ineligible.
Dependent claims 6 - 18 and 21 - 24 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend.
(4)Applicant argues dependent claims.
With respect to dependent claims 6 - 18 and 21 - 24, Applicant’s arguments are not persuasive.
Like independent claim 5, dependent claim 6 - 18 and 21 - 24 are similarly directed to the abstract idea of processing payments (i.e., a particular action (e.g., “wherein the particular action effects a transfer from the first party to the second party”)). Like independent claim 5, dependent claims 6 - 18 and 21 - 24 encompass (a) “certain methods of organizing human activity” such as “economic principles or practices” or “commercial or legal interactions” such as “sales activities or behaviors”, and “business relations”; and (b) “mental processes”. Similar to independent claim 5, the steps or acts are directed to the types of tasks (e.g., (a) data receipt/ transmission; and (b) data processing (e.g., “determine”, “use”, etc. step(s) as claimed)) considered “well-understood, routine, and conventional.”
With respect to claims 6 - 11 (Claim 6 recites, “wherein the particular action effects a transfer from the first party to the second party using respective accounts that share a common proprietary network among the different networks”. Claim 7 recites, “wherein the first party device stores account identification data corresponding to a single account to be used by the second party device for processing the particular action; and wherein the single account is linked to each of multiple ones of the different networks”. Claim 8 recites, “obtaining, at the second party device and from the first party device, data related to at least one of a plurality of accounts of the first party that can be used for the particular action”. Claim 9 recites, “obtaining the first party identifier at the second party device by way of radio- frequency identification technology”. Claim 10 recites, “wherein the first party device does not display or otherwise provide an external identifier as part of the first party identifier for the particular action”. Claim 11 recites, “receiving, at the second party device, an internal identifier from the first party device as part of the first party identifier”.). Like independent claim 5, dependent claims 6 - 11 recite limitations directed to “insignificant extra-solution activity”. Independent claim 5 suggests the claimed invention is exclusively from the perspective “at least one processor”, dependent claims 6 - 11 are only “nominally” or “tangentially” related because they are focused on what occurs at other, unclaimed devices (e.g., “the first party device”, “second party device”). Although dependent claims 8, 9,11 introduce positively recited steps or acts, the steps or acts are limited to necessary “data gathering and outputting”.
With respect to claims 12 - 14 (Claim 12 recites, “wherein the security-based communication protocol is based on an encrypted code from the first party device for verification before completion of the particular action.” Claim 13 recites, “wherein the security-based communication protocol for the particular action includes a confirmation requirement that the first party device is located proximate the second party device.” Claim 14 recites, “using a geographic-location confirmation circuit to confirm that the first party device is located proximate the second party device.”). In dependent claim 12 - 14 the abstract idea is described with more specificity (i.e., attributes of the “security-based protocol”), but this is not sufficient to overcome 101. Like independent claim 5, dependent claims 6 - 11 recite limitations directed to “insignificant extra-solution activity”. Although dependent claims 12 and 13 introduce specificity (i.e., attributes of the “security-based protocol”), the specificity is limited to necessary “data gathering and outputting” (e.g., See independent claim 5 which states, “receiving, by the at least one processor, an authentication code provided via the first party device in accordance with a security-based communication protocol;”). Although dependent claims 14 introduces positively recited steps or acts, similar to independent claim 5, the computer is “merely being used as a tool” (e.g., See dependent claim 14 which states “using a geographic-location confirmation circuit to …..”).
With respect to claim 15 (Claim 15 recites, “wherein a mobile phone linked or corresponding to the first party identifier is not used as an identification source for the particular action.”). Like independent claim 5, dependent claim 15 recites limitations directed to “insignificant extra-solution activity”. Independent claim 5 suggests the claimed invention is exclusively from the perspective “at least one processor”, dependent claims 15 is only “nominally” or “tangentially” related because is focused on what occurs at another, unclaimed devices (e.g., “mobile phone”).
With respect to dependent claims 16 - 18 (Claim 16 recites, “confirming, by the at least one processor, the authentication code according to the security-based communication protocol by involving a text message conveyed between a mobile phone linked or corresponding to the first party identifier and a processing control circuit that is operated on behalf of an institution.” Claim 17 recites, “accessing, by the at least one processor, the action data by accessing action data packets that are packaged for sending to the different networks in accordance with (e.g., (a) Although claims 16 - 18 recite performance “by the at least one processor”, “mere instructions to implement an abstract idea on a computer are not indicative of integration into a practical application”. (b) Although positively recited steps or acts are introduced such as “accessing”, “sending”, these steps are “insignificant extra-solution activity” as they are “limited to necessary data gathering and outputting”. (c) Collecting information (e.g., “accessing”, “sending”), analyzing it (e.g., “confirming”, “authenticating”) and displaying certain results of the collection and analysis involves “generally linking the use of the judicial exception to a particular technological environment or field of use”. Similar to independent claim 5, the steps or acts in dependent claims 16 - 18 are directed to the types of tasks (e.g., (a) data receipt/ transmission (e.g., “accessing”, “sending”, etc. step(s) as claimed); and (b) data processing (e.g., “confirming”, “authenticating”, etc. step(s) as claimed)) considered “well-understood, routine, and conventional.”
With respect to dependent claims 21 - 23 (Claim 21 recites, “wherein the selected one of the different networks is selected independently of the first device and the second device, and the action data is network independent.” Claim 22 recites, “wherein the selected one of the different networks is not identified to the first device or the second device during the particular action.” Claim 23 recites, “wherein the selected one of the different networks is a first network, and the method further comprises: selecting, independently from the first network, a second network from the different networks for processing the particular action for the second party; and processing the particular action between the first network and second network.”). Applicant’s arguments are not persuasive. Like independent claim 5, dependent claim 21 - 23 are similarly directed to the abstract idea of processing payments (i.e., a particular action (e.g., “wherein the particular action effects a transfer from the first party to the second party”)). Like independent claim 5, dependent claim 21 - 23 encompass (a) “certain methods of organizing human activity” such as “economic principles or practices” or “commercial or legal interactions” such as “sales activities or behaviors”, and “business relations”; and (b) “mental processes”. Similar to independent claim 5, dependent claims 21 - 23 are not indicative of “integration in to a practical application” (e.g., (a) With respect to dependent claims 21 and 22, although the “selecting” steps is described with more specificity, “mere instructions to implement an abstract idea on a computer are not indicative of integration into a practical application”. Although dependent claim 23 recites positively recited steps or acts, the claim is silent regarding who or what is performing those steps or acts. (b) Collecting information, analyzing it (e.g., “selecting”, “processing”) and displaying certain results of the collection and analysis involves “generally linking the use of the judicial exception to a particular technological environment or field of use”. Similar to independent claim 5, the steps or acts in dependent claims 21 - 23 are directed to the types of tasks (e.g., (a) data processing (e.g., “selecting”, “processing”, etc. step(s) as claimed)) considered “well-understood, routine, and conventional.”
With respect to claim 24 (Claim 24 recites, “wherein the first device is a first credit card associated with a particular network, and the one of the different networks is different than the particular network.”). Like independent claim 5, dependent claim 24 recite limitations directed to “insignificant extra-solution activity”. Independent claim 5 suggests the claimed invention is exclusively from the perspective “at least one processor”, dependent claim 24 is only “nominally” or “tangentially” related because is focused on attributes of another, unclaimed devices (e.g., “the first device”).
(5)Applicant argues controlling law/ broadest reasonable interpretation.
The claims have been afforded their broadest reasonable interpretation. See also, MPEP § 2111. All elements of Applicant’s claimed invention were considered and Applicant’s claimed invention has been considered as a whole. In particular, the elements directed to the judicial exception (i.e., abstract idea) were considered under 2(A), PRONG 1. See at least pgs. 12 - 13 above. The combination of additional elements were considered under 2(A), PRONG 2. See at least pgs. 13 - 14 above. In particular, the inventive concept under 2(B). See at least pg. 14 - 15 above. Dependent claims 6 - 18 and 21 - 24. See at least pg. 15 above.
Prior Art
Applicant's arguments have been fully considered but they are not persuasive.
(1)Applicant argues the prior art fails to explicitly disclose, “selecting, by the at least one processor, using the portion of the stored profile data, one of the different networks for processing the particular action for the first party;”
Applicant’s line of reasoning is unclear. First, Kight does not have an explicit requirement regarding the payment network the “payer” is associated with. Paragraph [0036] of Kight suggests the “payer” “could be associated with the first payment network or could be associated with another payment network”. There is no requirement in Kight that the “payer” is associated with the “first payment network”. Even when the “payer” is associated with the “first payment network”, para. [0036] of Kight is still describing a scenario regarding “payment to a payee that is not associated with the first payment network”. Thus, selection of an different “payment network” for the “payee” is necessitated to facilitate the payment. Para. [0037] describes this “second payment network” for the “payee”. See citations supra.
(2)Applicant argues the prior art fails to explicitly disclose, “receiving, by the at least one processor, an authentication code provided via the first party device in accordance with a security-based communication protocol; confirming, by the at least one processor, the authentication code to authenticate and verify approval of the particular action;”
Stambaugh describes a code (akin to “authentication code” as claimed) that can be provided via a user’s mobile communication device (akin to “provided via the first party device” as claimed) that can be used for authentication, verification and facilitating completion of the transaction. See citations supra.
(3)Applicant argues combination of Kight, Stambaugh and Coronna.
Analogous art It has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Kight, Stambaugh and Coronna are in the field of the inventor’s endeavor as they pertain to data processing involving transaction and/ or accounting records. In this case, Kight is reasonably pertinent to a particular problem with which the inventor was concerned of providing different networks using different respective network-specific protocols. In this case, Stambaugh is reasonably pertinent to a particular problem with which the inventor was concerned of providing authentication. In this case, Stambaugh is reasonably pertinent to a particular problem with which the inventor was concerned of effecting a particular action.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the teachings of Kight by adopting the teachings of Stambaugh and Coronna to provide providing, by at least one processor, access to different networks, each of the different networks configured to effect the particular action involving the first party having the first party device and the second party having the second party device, including communicating with the different networks using different respective network-specific protocols for each of the different networks;
receiving, by the at least one processor, an authentication code provided via the first party device in accordance with a security-based communication protocol;
confirming, by the at least one processor, the authentication code to authenticate and verify approval of the particular action; and responsive to the authentication, causing, by the at least one processor, a network interface associated with the selected one of the different networks to configure data for the particular action into a protocol associated with the selected one of the different networks and effect the particular action via the selected one of the different networks.
One would have been motivated to improve security and minimize risk for users.
The claimed invention applies
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known techniques to improve a similar device (method, or product) in the same way; applies known techniques to a known device (method, or product) ready for improvement to yield predictable results; and
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known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. Thus, the claimed subject matter likely would have been obvious under KSR. KSR, 127 S.Ct. at 1741, 82 USPQ2d at 1396.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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SARA CHANDLER HAMILTON
Primary Examiner
Art Unit 3695
/SARA C HAMILTON/Primary Examiner, Art Unit 3695
Prosecution Insights